Publications
Patent Law Articles
Click on the title of each article listed below to follow a link to the article. I delivered each of the following articles to meetings of patent or environmental attorneys.
1. Supreme Court Jurisprudence on the Doctrine of Equivalents:
(Patent) The doctrine of equivalents expands the reach of a patent beyond its literal claims to include inventions 'equivalent' to the patented invention. I presented this article to the Delaware County Intellectual Property Forum.
2. Protection of Trade Dress:
(Trademark) A trademark identifies the source of a product. The appearance, or "trade dress," of a product also can serve to identify its source. This article discusses Supreme Court decisions concerning trade dress. I presented this article to the Delaware County Intellectual Property Forum.
3. Patent Reexamination:
(Patent) Patent reexamination is a mechanism for a patent holder to strengthen his or her patent by bringing new art to the attention of the examiner. This article discusses the finer point of patent reexamination. I presented this article to the Delaware County Intellectual Property Forum. The article is cited by "," Harvard Journal of Law and Technology, Vol. 17, No. 2, Spring 2004.
4. Indirect Infringement of Copyright:
(Copyright) This memorandum is a review of selected cases addressing the question of whether a provider of a copying technology is liable for infringement where other persons use the technology to copy works protected by copyright. I presented this article to the Delaware County Intellectual Property Forum.
5. Trade Secrets in Pennsylvania:
(Trade Secrets) Pennsylvania adopted the Uniform Trade Secrets Act in 2004. This memorandum addresses the changes to state law from that adoption.
6. Patent Licensing of Future Inventions:
(Patent) This memorandum is a review of an article on patent licensing. I delivered this review to the Delaware County Intellectual Property Forum.
7. Enforcing Design Patents:
(Design patents) Design patents protect how an article looks rather than how the article works. Recent and pending court decisions may make design patents more valuable, and hence more worthwhile, than in the past. This article addresses the state of the law of design patent enforcement.
8. Appeal of Patent Claim Rejections:
(Patent) A final rejection of a patent application by a patent examiner is not the end of the process. The patent applicant can appeal the rejection to the Board of Patent Appeals and Interferences and to the Court of Appeals for the Federal Circuit. The patent applicant also can file a request for continuing examination to bring new facts or arguments to the attention of the examiner.
9. Inequitable Conduct as a Defense to Patent Infringement:
(Patent) The doctrine of 'inequitable conduct' is a shield against patent liability and is a defense frequently raised in patent infringement litigation. This memorandum provides an overview of the historical roots and current development of 'inequitable conduct.'
10. Deferred Examination of Patent Applications
(Patent) Deferred examination allows a patent applicant to request that review of the patent application be deferred by up to three years from the priority date, which can be valuable for some. This memorandum reviews the use and requirements of deferred examination.
11. Supreme Court Decisions on Patentable Subject Matter
(Patent) The decision in the Federal Circuit Court substantially restricted what can be patented and currently is on appeal to the U.S. Supreme Court. This memorandum is a review of prior Supreme Court decisions on the what can be patented.
Newsletters
The following are links to newsletters by Lipton, Weinberger & Husick.
1. Newsletter, March 2009
Registering copyrights and
trademarks with Homeland Security
Deferred examination of patent applications
Linking may be dangerous to your health
2. Newsletter, April 2009
iPod to the Queen
Applications and revenue down at the PTO
Trademarks- Use them or lose them
Protecting yourself from infringement on EBay
3. Newsletter, May, 2009
State trademark registration
Patent reform - First to File vs. First to Invent
Don't forget trade secrets
$9.7 million trade secret judgment
4. Newsletter, June, 2009
Facing Trademark Protection on Facebook
Design Patents
Real Trademarks Used in a Virtual World
Developments at the Board of Patent Appeals and Interferences
5. Newsletter, July, 2009
Is ASCAP crazy?
Michael Jackson Defied Gravity.
Registered Offices are important.
Why not use fake patent numbers?
6. Newsletter, August, 2009
New PTO Administrator sworn in.
Is a download a performance?
Supreme Court to consider what can be patented.
Real trademarks in a virtual world, part II
7. Newsletter, September, 2009
Is your patent vulnerable to foreclosure?
Sign, sign, everywhere a sign.
PTO Director Kappos to reform examiner 'count'
system
Congress considers copyright protection for
fashion designs.
8. Newsletter, October 2009
Ringtones freed by district
court.
Hope for the patent system?
The Mighty Mouse saga
Free patent search resources
9. Newsletter, November 2009
Read your software licenses carefully.
PTO pilot program for small entities.
What's in a name-Choosing a domain name can be tricky.
You don't have to wait until your patent issues.
10. Newsletter, December 2009
Bloggers and advertisers cautioned by the FTC
on product endorsements.
Global Findability goes for the gold.
What to do when your trademark is registered as a domain name by
another person.
Planning to license or sell your patent?
11. Newsletter, January 2010
Teaching innovation.
Using trademarks where they do not belong.
PTO pilot program for green technologies.
Do patent applications require a separate written description?
12. Newsletter, February 2010
Intent-to-use trademark
applications and the Internet.
Is plagiarism copyright infringement?.
Proper patent marking.
When is a product 'sold' for patent infringement?
13. Newsletter, March 2010
Is an image without a copyright
notice free to use?.
Don't go naked when assigning a trademark.
PTO budget proposes more examiners and fees..
Cease and desist letters and trademark rights.
14. Newsletter, April 2010
Cyberspace is expanding.
Can I sell photos that I take?
Planning for events beyond your control.
Patent reform is not dead.
15. Newsletter, May 2010
Can I freely distribute a news article?.
Patent reform Lite.
Registering trademarks for scents, color and sound.
International piracy.
Patent Prosecution Highway
16. Newsletter, June 2010
Supreme Court Decides Bilski.
Supreme Court sends a message to employees.
Can I donate a copyright?.
PTO considers multiple patent review tracks.
Internships: It's not just another free employee.
17. Newsletter, July 2010
Legal jurisdiction in an Internet world
without borders
Good grammar of copyrights and trademarks
Inventor's Eye presents Inventor-friendly information from the PTO.
Public viewing of DVDs sold for individual use
Environmental Law Articles:
1. Pennsylvania's Anti-Sprawl Legislation:
(Growth) This monograph was published by the Philadelphia Bar Association and relates to efforts to control explosive suburban real estate development.
2. Pennsylvania's Water Quality Antidegradation Program:
(Water Pollution) The thrust of the "anti-degradation" water pollution program is to protect lakes, streams and rivers from pollution. Pennsylvania's program was substantially changed in 1999 in response to litigation and pressure from EPA. I originally presented this article to a meeting of Philadelphia environmental attorneys.
3. The "Any Credible Evidence" Rules and Compliance Assurance Monitoring:
(Air Pollution) The ACE and CAM rules relate to the monitoring and enforcement of Federal air pollution requirements. The CAM rules require air polluters to collect evidence of their own air emissions. The ACE rules allow a private citizen to use the information to enforce the clean air laws. I presented this monograph to the Advanced Air Section of the Pennsylvania Bar Association Environmental Law Forum.
4. Ozone Non-Attainment and the Problem of Long Range Transport:
(Air Pollution) Air contaminants travels from power plants in the Midwest and cause air pollution problems in the Eastern United States. Fixing the problem will be expensive and is resisted by Midwestern states and electrical utilities. The monograph explores the efforts by EPA and several Eastern states to force a cleanup of the Midwestern power plants. I presented this monograph to the Advanced Air section of the Pennsylvania Bar Association Environmental Law Forum.
5. Legislation Affecting the Solid Waste Industry:
(Solid Waste) The companies that collect and dispose of trash are under attack in Pennsylvania. This article discusses efforts by the Pennsylvania Legislature to limit the waste disposal industry. I originally presented this article to a meeting of Philadelphia environmental attorneys.
6. RCRA Land Ban:
(Hazardous Waste) The RCRA Land Ban is an effort by
Congress to phase out all disposal of hazardous wastes in landfills
or other land-based disposal. I originally presented this
article to a meeting of environmental attorneys.
